Patent Puzzle

Can You Patent an Idea?

Richard Gearhart — Thu, 29 Sep 2011 07:35:31 -0500

Can I get a patent for my “idea?”

Clients sometimes ask us whether it is possible to get patent for his/her “idea.” The word is somewhat too vague to warrant a definitive answer. Our initial reply would probably be stereotypically lawyer-like: it depends. However, some further explanation may probably provide enough guidance.

When a client asks whether his/her “idea” can be patented, it usually falls into two kinds of situations. In the first category, the idea, though somewhat complete, is an abstract one that cannot be reflected in something concrete, such as a tangible device or a chemical compound. One fine example is a method to evaluate the ups and downs of the stock market. Can the client patent such an “idea?” The second kind of “idea” usually refers to a design or blueprint that is directed to something concrete, but the intended target of the “idea” is far from complete. For example, if the inventor has a detailed, fine scheme to build a remote-controlled paper clipper but the lack of funds made it impossible to buy some parts for now, can the inventor patent his “idea” for the device?

It is no surprise that which category does the “idea” belong to can affect its patentability – the likelihood it can get patent protection. For the first category of “abstract ideas,” the key is proper patent drafting that makes the “idea” fit into the subject matter requirement of patent law. If it is the latter category, the inventor needs to put more consideration into how detailed the “idea” currently is and how likely it will be materialized. This week’s blog post will discuss the first type of “abstract idea,” while the second category will be discussed next week.

For “abstract ideas,” the main obstacle for a patent protection is the subject matter requirement of patent law. Under Section 101 of the United States Patent Act, only “new and useful process, machine, manufacture, or composition of matter” can be patented. An “abstract idea,” in most circumstances, can be considered in some way as a process. However, a pure abstract idea, such as a mathematical formula (E.g. Einstein’s E=mc2), on its own, cannot be patented. On the other hand, a process to calculate, for example, the fluctuation of the stock market, may be patented if the patent application is drafted in an appropriate manner. The federal courts, through the years, have wrestled with the boundaries of patenting an “abstract idea.” In the past few years, the U.S. Supreme Court and the Federal Circuit Court have provided some guidance that is helpful to such an inquiry. All the legalise aside, the most reassuring way to make an “abstract idea” patentable is to associate the idea with “machine or transformation”—as instructed by the Federal Circuit Court. Under this doctrine, an idea, or a process is patentable if it (1) is implemented with a particular machine, that is, one specifically devised and adapted to carry out the process in a way that is not concededly conventional and is not trivial; or else (2) transforms an article from one thing or state to another. For most of the “abstract ideas,” the most straight forward approach is to draft a patent application that directly links the idea to a machine that carries out the idea. It should be noted, however, the “machine or transformation” approach is not the only way to make a process patentable. However, as indicated above, it is probably the most reassuring method. Moreover, to draft such a patent application requires experience and a keen understanding of the invention. It is probably wise to seek professional help to avoid unnecessary delays in getting a patent.

So what about the “ideas” that are directed to tangible devices or compounds but the intended projects are far from complete? For these “ideas,” the key is how concrete and detailed the design or plan is. The major legal obstacle here is the Enablement requirement imposed by Section 112 of the United States Patent Act. Section 112 states that the specification of a patent, the detailed descriptions for the invention, shall Enable “a person skilled in the art” to “make and use” the invention. Here, “art” can be generally understood as the field of technology of the invention. If the patent application does not satisfy the Enablement Requirement, a patent will not be issued.

To better understand the Enablement Requirement, it is essential to get a basic grasp of the underlying rationale of the patent system. Fundamentally speaking, the patent system is an exchange between the inventor and the public: the public, through the government, grants to the inventor or the owner of the invention a monopoly of limited time (currently it is 20 years) to make, use, and sell the invention, in exchange for the disclosure of the invention by the inventor. Naturally the Enablement Requirement comes into play. Without this, there is no guarantee that the disclosure in the patent is sufficient to warrant granting the patent monopoly. The Enablement Requirement is the statutory language to hold the inventor to his/her side of the bargain—a full and useful disclosure of the invention. It is designed to make sure that the public, again through the government, will not be shortchanged.

For an “idea” that is not fully materialized, the patent law does not prevent the holder of the “idea” to get a patent for it. You need not wait to have a prototype remote controlled paper-clipper to file a patent for it, as long as your disclosure enables a “person skilled in the art”—usually considered a general expert in the field, to make one. However, if the “idea” is so vague and amorphous that it will not teach “a person skilled in the art” to build a remote controlled paper-clipper, the government will not grant a patent. As you may realize now, it is impossible to draw a definitive line here without carefully reviewing the “idea.” Moreover, it is also essential to be able to parse the legal definition of “a person skilled in the art” as well as the technology demand to “make and use” the invention. Therefore, it would probably wise to at least briefly consult a patent law professional as some legal expertise is required here.

Sometime a client may ask an important and related question regarding patenting an unfinished design: when is the time of invention—the time of having the “idea,” or the time of finishing making the prototype? If this blog was written a month ago, the answer would have been very complex and confusing. However, as if hearing the voice of the troubled inventors, Congress passed the America Invents Act of 2011 on 9/9/2011 and President Obama has signed it into law on 9/16/2011. Under the revised framework, the U.S. adopts a “first-to-file” system that no longer focuses on the time of invention to determine who the rightful owner of the invention is. The new system emphasizes the time to file the application. If A conceives the “idea” earlier, or even makes the prototype earlier than B, A still loses if B files his patent application first. Therefore, the new patent laws encourage one to file a patent application for his invention as soon as possible. But what is to stop him from filing for something dreadfully premature? That will be the task of the Enablement Requirement, which remains intact under the new law.

– Contributed by Y. Harry Du

November 14-20 is Global Entrepreneurship Week (GEW)

Richard Gearhart — Wed, 24 Aug 2011 14:51:53 -0500

ARE YOU READY?!

November 14-20 is Global Entrepreneurship Week (GEW)

www.unleashingideas.org

Created by the Kauffman Foundation, participation in this event gives you a chance to meet experts, get help, and maybe even win a contest – see a few below.

If you haven’t checked out the Kauffman Foundation website, www.kauffman.org,

you should! The Kauffman Foundation is the world’s largest foundation dedicated to entrepreneurship.

Global Entrepreneurship Week kicks off with start-up weekends in cities around the globe. The US dates and locations are:

November 11-13: November 18-20

Baton Rouge, LA Bloomington, IN

Champaign, IL Boulder, CO

Kansas City, MO Cambridge, MA

New Haven, CT Indianapolis, IN

Princeton, NJ Las Vegas, NV

Seattle, WA Lexington, KY

Orange County, CA

New York, NY

San Francisco, CA

For our clients and friends outside the US, dates and locations for other countries are:

November 11-13 November 18-20

Aarhus, Denmark Cairo, Egypt

Bucharest, Romania Calgary, Canada

Buenos Aires, Argentina Copenhagen, Denmark

Manama, Bahrain Geneva, Switzerland

Skopje, Macedonia Halifax, Canada

Sao Paolo, Brazil

Strasbourg, France

Toronto, Canada

Vancouver, Canada

Warsaw, Poland

The Gearhart Law patent firm is based in the US but we have clients worldwide. Visit us at www.gearhartlaw.com to see the range of languages our team is fluent in.

To learn more about GEW, visit their website at www.unleashingideas.org.

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Some of the GEW contests are:

Startup Open – see their website at www.startupopen.com .

Cleantech Open Global Ideas Competition – see their website at www.cleantechopen.com – this one gives you a chance to win $100,000 in support and services.

Your Big Year – DEADLINE 9/1/11 – travel the world for a year! See their website at www.yourbigyear.com. Even if you miss the deadline, there’s other great info. waiting for you there.

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We hope you find this information useful, and whatever your endeavors, we wish you success!

Elizabeth Gearhart, Ph.D.

Patent Agent

Gearhart Law

How can I do my own (FREE) patent search?

Richard Gearhart — Thu, 18 Feb 2010 21:39:30 -0500

Inventors often ask how they can find patents related to their idea. Patent searching is not especially difficult, although it can be time consuming.

The goal of patent searching is to understand the prior art related to the invention. This serves several purposes. First, it can help an inventor decide if patent protection is worth pursuing. Second, it can help the patent drafter draft broad claims that avoid the prior art.

Prior art constitutes everything that ever happened prior to the date of invention by the inventor, anywhere in the world. It includes not only patents and patent applications, but other publications and products too.

A through patent search includes a review of patents and patent publications outside the US, as well as patents and patent publications outside the US.

The internet provides excellent access for prior art searching. For example, as simple keyword search in Google or Yahoo can locate similar products.

The internet is also an excellent venue for patent searching. There are a number of patent data bases that provide excellent results.

For example, theUnited States Patent and Trademark Office has an excellent data base for searches of US Patents and Publications. For Patents outside the US, good places to look include the World Intellectual Property Organization, website (Patent Scope), the European Patent Office search site Espacenet .

Other free online services include Google Patents, and Free Patents on Line, among others. It is not always clear, however, how secure the free online patent searching data bases are.

The most common approach to searching is to simply type in keywords that reflect the invention, and review the resulting results. Sometimes, however, the search returns too many results. The search can be narrowed by using classifications.

Classifications are the categories that the Patent Offices use to sort and organize patents into groups. Adding a classification to your search can limit your search results and omit extraneous patents that have no relation to your invention. A full explanation of classification searching is beyond the scope of this post, but for the truly dedicated an excellent explanation can be found at the US Patent Office Search Site Classification Help.

These data bases can provide the inventor excellent tools to do their own patent searching. Final decisions about whether to file a patent should always be made in consultation with a patent attorney.

Licensing - The grant clause.

Richard Gearhart — Mon, 08 Feb 2010 15:33:43 -0500

One of the most important clauses in a license agreement is the “grant clause”. The grant clause defines the scope of the legal rights that the patent holder (or “Licensor”) gives to the user (“Licensee”). The scope of the grant clause has significant implications for the commercial use of the invention.

Here is a typical grant clause that could be found in a license agreement – there are many ways to grant rights in a patent, the one below will suffice for illustrative purposes:

“The Licensor hereby grants the Licensee an exclusive, royalty bearing license in US Patent 9,999,999 in the territory defined as the United States.”

The grant clause is full of important information.

First, the grant clause states the license is exclusive. This means that nobody except the Licensee will have the right to make, use or sell the technology. The parties have agreed that only this one user will have the right to commercialize this invention. This is in contrast to a “non-exclusive” license. A non-exclusive license gives the patent holder the right to grant additional licenses to other users. In some cases, the license can be drafted in a way to start as an exclusive license, then change to a non-exclusive license. This can be conditioned to happen if the user does not meet certain conditions of the license, such as minimum sales requirements. Sometimes, the patent holder agrees to give a time advantage to the first user, then after a year open the market to other users.

Second, the grant clause above states that the license is royalty bearing. This means that the user will pay the licensor a fee for the right to use the technology. Usually, the royalty is paid on a per unit sold basis, although other methods of calculation are possible. The royalty can be paid on a net profit or a gross profit basis. Royalty rates, or the percentage paid per unit, can very greatly depending on the product and industry. The percentage is usually an important focal point of the negotiations.

The grant clause also refers to a specific patent, here fictionally referred to as US Patent No. 9.999.999. It could also refer to several patents, a patent portfolio, or even to just one or more claims to a patent. So a license can grant rights in multiple patents as well as

a single patent.

The last part of the clause states the geographical region in which the license is granted. In this case, the grant is in the United States. This can be altered to be a region or territory, or expanded to be global, or a region.

Patent Assignments

Richard Gearhart — Wed, 03 Feb 2010 19:32:00 -0500

Patents are property so, like any property, ownership can be transferred from one person or company to another. A patent attorney can help prepare an assignment for the inventor.

A “patent assignment” is the legal document that makes this transfer happen.

A common type of assignment is the transfer of ownership of the patent or patent application from the inventor to the inventor’s LLC.

In the United States, patents are filed in the name of the inventor. If the inventor has patented the invention, the inventor can keep ownership of the patent in his or her name, or they can make it an asset of an LLC. If the patent or patent application is to be owned by the LLC, an assignment is executed by the inventor and the transfer becomes effective.

If there are multiple inventors on a patent application, then both inventors may assign the patent to the LLC. The LLC document (or operating agreement) can spell out how the profits from the venture are to be allocated.

Inventors often sell their patent as a way to profit from it. An assignment will also be executed if the patent is sold to a third party.

Inventors who invent for their employer may have an employment contract that requires them to assign the patent to the employer. An assignment will be executed in this case. Again, a patent lawyer will help prepare the needed documentation.

Licenses - Introduction

Richard Gearhart — Fri, 29 Jan 2010 14:51:42 -0500

One of the most common ways an inventor can take advantage of their patent is through licensing. A license gives another rights to make, use or sell an invention. However, the patent holder retains ownership of the patent. A license is a bit like a renting a piece of real property. The owner still owns it, but lets another use it, usually for a profit. When it’s a real property license, the payment is called “rent”. If it’s a patent that’s being licensed, the property is called a “royalty”.

Licenses allow the inventor to share in the profits of the manufacturer or producer of the invention. Often, the license will be based on the number of units sold by the producer. This arrangement is advantageous for the producer, since the producer only pays the licensor based on the producer’s sales.

The license can take many different forms and can be tailored to the needs of the parties to the transaction. For example, the license can be exclusive or non-exclusive to the party receiving the license. If the license is exclusive, then only the party receiving the license can make, user or sell the invention, and nobody else. If the license is non-exclusive, then the owner of the patent can license it many different parties.

Patent Infringement

Richard Gearhart — Mon, 25 Jan 2010 12:00:00 -0500

What happens if someone infringes on another person’s patent? The inventor who holds the patent can sue in court for damages. If a judge finds that patent infringement has occurred, the court may rule that the infringing party discontinue production and sales of the product. The court may also award damages to the person whose patent was infringed. Often the cases are settled by the patent attorneys without going to trial and the infringing party pays the other a royalty for the use of the technology.

If you are accused of infringement, or if you find someone infringing your patent, a patent attorney can help you decide how to proceed.

A patent is only valuable if it is enforceable and can withstand the rigors of litigation. Likewise, the patent professional you choose for your patent needs should have an understanding of what can happen to your patent if it ends up in court. There is no substitute for an understanding of how your patent will be challenged by an alleged infringer.

At Gearhart Law, we have many years of litigation management experience, and have learned first hand how your competitors will seek to avoid or invalidate your patent in court. This experience is invaluable in helping you to achieve the best possible protection for your invention.

For example, in the case of Wesley Jessen v. Bausch & Lomb, Richard Gearhart, Esq. was involved in every aspect of the case, including discovery, motions, trial, and appeals, and with the help of other attorneys obtained an injunction preventing Bausch & Lomb from selling it’s product for the life of the patent.

How do I File a Patent?

Richard Gearhart — Fri, 22 Jan 2010 22:06:08 -0500

Many of my clients in New Jersey ask about the steps for filing a patent. There are three main steps to patenting an invention.

First, a global or US patent search is conducted to make sure your invention is original.

Second, the patent must be drafted and filed with the patent office.

The final step is to prosecute the patent.

There are many databases, including the US Patent and Trademark Office (USPTO) website which list published patents. Searching the USPTO site for patents on inventions similar to yours (prior art) is the first step. In order to get an invention patent, your invention must be unique enough to be allowed by the patent office. An examiner at the patent office looks at all the prior art when determining whether to allow your patent. Experienced patent attorneys will make a judgment on what they think the USPTO will allow when evaluating your patent application. The patent attorney will then write your application in a way to maximize your chance of success and, after your review, will file it with the USPTO.

The next step in getting an invention patent is prosecution. The USPTO does not grant a patent just because the paperwork has been filed; the patent attorney must argue the points of the patent with the patent examiner and convince him or her that the invention meets all of the USPTO requirements. Your chances of success in this step are increased if you use an experienced patent attorney who has dealt with the USPTO on patent inventions and is familiar with their requirements.

Need to get an invention patented or conduct a US patent search? Call Gearhart Law today.

Tax Patents and the Law of Unintended Consquences

Richard Gearhart — Sun, 24 May 2009 23:26:26 -0500

Jim Singer in his IP Spotlight Blog ipspotlight.com/2009/05/23/new-federal-bill-seeks-to-ban-tax-planning-strategy-patents/ points out:

On May 21, 2009, Representatives Rick Boucher (D-Va) and Bob Goodlatte (R-Va) introduced introduced a bill that would ban patents that cover tax planning strategies. The bill would amend Section 101 of the Patent Act to provide that a ”tax planning method” is not patent-eligible subject matter. Under the bill, a prohibited “tax planning method” is:

a plan, strategy, technique, or scheme that is designed to reduce, minimize, or defer, or has, when implemented, the effect of reducing, minimizing, or deferring, a taxpayer’s tax liability, but does not include the use of tax preparation software or other tools used solely to perform model mathematical calculations or prepare tax or information returns.

Similar bills were introduced into the House and Senate 2007 and 2008, but the prior bills never got very far.

Interesting question where this will go. With all eyes on patent reform, this seems to fit right in.

On the other hand, does allowing monopolies on tax strategies reduce the availability of those strategies generally? (assuming only one firm can practice them). And if that is the case, then doesn't having a tax patent increase tax revenue for the Federal Gov, since fewer tax practioners can use the strategy? I thought the Federal Govenment was looking for ways to increase, not decrease revenue. Is this the law (pardon the pun) of unintended consequences?

Do you need international patent protection?

Richard Gearhart — Thu, 26 Mar 2009 22:55:28 -0500

So you’ve gotten your patent application on file, the rush and the fuss are over with for the time being, you’ve hit your deadline before the presentation or the trade show. Fortunately the patent decisions have been made now and you can forget about this part of your project at least for awhile. And maybe you take a deep breath, because the financial hemorrhage from the patent work is at least on hold.

But soon you get a letter from your patent attorney advising that the one year deadline is fast approaching and you need to decide whether you want international protection. What do you decide? How do you decide? What countries do you file in? Is worth the money it will cost?

Well the answer to the question “do we need international protection” is a qualified “maybe”.

Obviously, if you don’t plan to do business outside the US, then the answer is a clear “no”. If you get a US patent, you can always prevent people from importing into the US from another country. The US is all you need.

If you plan to sell outside the US, then you want to consider patents in the major markets where you plan to sell. If you plan to sell in Japan, for instance, consider a patent in Japan. That too is obvious.

But just because a patent is available doesn’t mean you want one. Here are some additional considerations.

First, think about the lifecycle of your product. The granting of international patents will lag behind the grant of the US patent by at least two years, in some countries more. It is not usual for foreign protect to take six years or more from the filing date of the US application. With some products it’s hard to predict – for others, the product lifecycle is much shorter. Before spending the money do your best to analyze whether the product will be on the market when the patent is granted.

Unless there is some special consideration, except for Brazil, forget about filing for patents in Latin America (with all due respect), Africa, or the Middle East (although some exception for Israel) and former Soviet bloc countries. These regions have weak patent systems for getting and enforcing patents. In many countries where private ownership principles are weak, the courts and laws do not favor patent holders. Think too about whether you’d be willing to bankroll a lawsuit in one of these countries. That’s not to say that filing in these countries is never a good idea, just that your particular facts should justify it and the filings should be on an exceptional basis.

Still, that leaves North America, Asia, and Europe, all with pretty good patent systems and courts. How do we maximize patent protection while keeping a reasonable budget?

If the product is a consumer product, then going after major markets makes sense. A strong, yet reasonably priced portfolio would include the US, Canada, Europe (Great Britain, France, Italy, Germany, maybe Spain), China, and Japan. This list will cover 90% of 90% of any companies needs. I’ve seen many companies with over 1 billion in sales function perfectly well just filing in the countries on this list. Filing costs, i.e. just to get the application on file in these countries is about $20-25,000 depending on exchange rates and application length. Prosecution costs and other fees can be estimated at 6-8,000 per country spread over 4-5 years. Expect your total bill in the other countries to be about 75-100k, excluding the US.

Many or most of your competitors may concentrate manufacturing in one country or region. For example, India has a large generic drug industry and is a natural place for branded pharmaceutical companies to consider. The electronics industry often files in Korea or Singapore. China is a favorite for general and consumer manufacturing. If you can anticipate where your competitors will make your product, filing a patent there is a great strategy.

Why? Suppose you are trying to stop an infringer. It is cheaper to file an infringement suit where the product is made, (which may only be one country) rather than filing suits in each country where it is sold (which may be many countries).

A very popular way to defer the costs associated with the international portfolio is via the PCT. With the PCT, you can wait an additional 18 months to decide which countries need protection, and defer the most of the costs until that time. Normally, you are required to make international filing decisions within one year of you first filing. The PCT allows you to defer the costs for an additional 18 months for a total of 30 months from your priority date. You can also defer deciding which countries you want to file in until the 18 month period has expired. The cost of the PCT is about $3,000 to $4,000. For this fee you also get a search. The search can help you decide the chances of getting patent the patent allowed.

If you are an individual entrepreneur and your strategy is to license, then a PCT application is a good idea – especially if you plan to license to larger companies that want global product lines. The PCT gives them the option to pursue international protection for your project in the counties important to them. This will make your patents more attractive to a perspective licensee.

As always, before making any international patenting decisions, it is best to discuss first with your patent attorney, as the facts and considerations in each case are different.

Who will read your patent?

Richard Gearhart — Wed, 25 Mar 2009 22:44:12 -0500

You may be surprised to realize your patent has many audiences. The list includes you (the inventor), your inventor peers, Patent Examiners, investors and business people, other lawyers, and in some cases, a judge and jury. A good patent application will effectively address the needs of each audience.

Obviously, the application reflects the inventor’s work and creativity. Often the application will include parts and descriptions written by the inventors, and so has the inventor’s own voice. The patent provider will incorporate as many of the inventor’s ideas and suggestions as possible with the goal of protecting as many variations of the invention as possible. In any case, you, the inventor, should be happy and satisfied with the application's content.

It may also be read by your peers. This happens frequently in highly technical fields, such as biotechnology and engineering. Here a premium is placed on scientific content and accuracy. Most inventors enjoy the feeling of statisfaction that comes when their application publishes and their ideas have become a part of the technical literature. Published patents provide important teachings and are considered an important scientific resource. The publication part of the process helps fulfill the patent systems constitutional purpose of advancing the useful arts and sciences, by making technical knowledge publicly available that may otherwise remain secret.

Another important reviewer is the patent examiner at the US Patent and Trademark Office. The patent examiner has highly regulated criteria that the patent must be met before allowance. The Manuel of Patent Examining Procedure (MPEP) is the reference source for the patent examiner and contains thousands of pages that direct the Examiner though the proper examination of the patent application. The patent must meet the criteria set forth in the MPEP and the patent laws in general including novelty and non-obviousness, as well as numerous other details of a highly complex nature.

If the patent is filed internationally, the patent application must meet the requirements of each patent office in which the application is filed. While there are many similarities in the patent systems world wide, there are also important differences. The patent application should be drafted to be acceptable in as many of these different systems as possible. Issues such as application length and claim type can have dramatic impact on the cost of international protection.

The application will also potentially be viewed by investors and business people as well. If the patent is the subject of a license or sold as an asset the patent may be reviewed by the purchasers or licensees. In addition to the business professionals involved in a transaction, the patent may also be reviewed by another patent professional in the case of licensing, due diligence, or potential litigation. Here, the patent will be closely scrutinized to ensure that it meets all the legal requirements for sound patent protection. The tiniest mistake or imperfection will be uncovered, and potentially exploited.

Finally, if the patent is used against an infringer in court, the patent will be heavily scrutinized by opposing counsel. Parts of the application will need to be interpreted and understood by the judge and jury. Here, clear drafting and concise prose free of obtuse language and jargon will be of great benefit.

A patent practitioner with experience in many if not most of these areas will be in the best position to draft an application likely to address the needs of each of these audiences.

About the Author

Richard Gearhart — Tue, 24 Mar 2009 17:54:51 -0500

Richard Gearhart is the principal and founder of Gearhart Law, LLC a law firm specializing in patent services. The firm provides an array of services in the mechanical, software and chemical arts, and includes patent application drafting, domestic and international patent prosecution, opinion rendering, agreement and transactional work, and litigation support. Gearhart Law’s clients range in size from individual entrepreneurs to multi-million dollar businesses. For more information on patents and/or the firm’s services, call (973) 410-4005 or visit the website at www.GearhartLaw.com.

How to Select a Patent Attorney

Richard Gearhart — Mon, 23 Mar 2009 17:53:27 -0500

Some criteria to look for when choosing a patent attorney include:

1. Experience writing and defending patents.

A patent attorney who has a lot of experience will know what the USPTO expects in terms of the patent content, and will tailor your patent to fit those expectations. In addition, an attorney who has experience working with the patent examiners at the USPTO will better know what arguments to present on your behalf during the prosecution phase.

2. Litigation background.

A patent attorney who has been involved in litigation of patents, either for infringement purposes or other aspects of patent law has an understanding of what will hold up in court and what is likely to be challenged, and how to meet those challenges with arguments of his or her own.

3. Responsiveness.

Any patent attorney you choose should return your phone calls! They should answer any questions you have to the best of your ability.

4. Search criteria.

A search is essential for identifying prior art. Prior art is the set of patents for inventions that are similar to your invention. An experienced searcher knows what terms to use and how to identify relevant prior art. If there is prior art that is very close to your idea, then you can’t get a patent on your invention. It will most likely get rejected by the patent examiner, and you need to know that before you invest any money. If there is prior art that is close but not too close, then you need a patent attorney to help determine if there is a possibility of obtaining a patent.

5. Length of time to complete the patent search.

It should take only 1-2 weeks to get your search results. It may take a little longer (1 week) if the field of prior art is crowded with many inventions that are similar to yours.

6. Length of time to complete the patent.

This partly depends on you, because you should be involved with every step. After either meeting with the attorney to describe your idea or sending him or her the invention disclosure, the attorney should work with you to draft the claims. This should happen within 3-4 weeks of your meeting (the attorney needs time to draft some rough claims to discuss with you). After the claims are drafted, they are sent to you for review and/or revisions. Once the claims are written to your satisfaction, the drawings are requested from the draftsman; after the drawings arrive, the specification is drafted. This takes another 3-4 weeks for a relatively simple patent. Depending on the complexity of the patent and your responsiveness, you should have a first draft to review within 2 months of hiring a patent attorney. Of course, a more complex patent will take more time, usually an additional month or two. The patent should be filed with the USPTO within a week of your approval of the final draft.

7. Experience with international patents.

A patent attorney should know what the requirements, including timelines, criteria, and rough costs are of filing internationally.

Watch Out for the Scams

Richard Gearhart — Sun, 22 Mar 2009 17:52:10 -0500

Unfortunately, patenting and marketing inventions is an industry that attracts a lot of scam artists. While there are legitimate companies that can and do provide worthwhile help to inventors, many charge inventors thousands of dollars and do very little to actually help them. These unscrupulous firms may charge high fees just to provide information repackaged from the USPTO that anyone can obtain for free.

Some make claims about licensing and/or marketing inventions that exceed the firm’s ability to deliver. Others will deliberately understate costs and surprise you with additional fees that creep up later in the process once you are already committed. And still other firms have been known to take inventors’ money and literally disappear. Do your homework before signing anything or issuing payment!

Here is a partial list of things to watch for:

Check with the (USPTO) or the Federal Trade Commission (FTC) to see if there are any complaints or lawsuits filed against the company.
Find out if they have ever operated under a different name. Some of the less legitimate providers have changed names several times.
Ask for a complete disclosure of all costs up front.
Be particularly suspicious of claims that they will definitely license your product and/or market it successfully. Early in the patent process, it is difficult or impossible to know these outcomes in advance.

Resources you can use to help avoid fraud include the USPTO and the Federal Trade Commission (FTC). The USPTO does not investigate or participate in any legal proceedings against invention promoters/promotion firms. But, under the American Inventors Protection Act of 1999, the office does publish complaints about invention promoters. You can find dozens of these firms listed here.

The FTC, meanwhile, provides a consumer alert, "Spotting Sweet-Sounding Promises of Fraudulent Invention Promotion Firms" at this page.

Perhaps the best assurance that you will be well represented—at least during the patent phase—is to work with a properly licensed patent attorney. He or she has received considerable legal training and must answer to the state bar association in the event a client lodges a complaint. Other types of firms are not necessarily subject to this kind of oversight, meaning you lack this extra layer of protection.

What does it Cost to Get a Patent?

Richard Gearhart — Sat, 21 Mar 2009 17:51:11 -0500

There are two stages to getting a patent, each with its own set of fees. The first stage is the filing stage. The second stage is the prosecution stage, which occurs 1-2 years after the filing stage.

There are filing fees and attorney’s fees associated with filing a patent. Filing fees are fees you pay to the USPTO (United States Patent and Trademark Office) for filing your patent in their databases. These fees may increase slightly year to year, but for 2009 the costs are:

$110 to file a provisional patent
~$600 to file a utility patent

Attorney’s fees to file a patent vary from about $3,000 up to $20,000 or more, depending on the complexity of the patent. Most patents for individual inventors fall on the lower end of the cost scale. These fees cover the actual writing of the patent, which includes:

Drafting the claims – the claims capture the essence of your idea in broad terms. The claims are the most important part of the patent, and must be done correctly for maximum protection of your idea.
Obtaining the proper drawings - a patent attorney usually uses a draftsman, who takes your sketches or ideas and turns them into drawings that meet all of the patent office’s criteria.
Drafting the specification – this part of the patent uses the drawings and your ideas to describe your invention in detail, and is as comprehensive as possible to further protect your patent’s validity.
Filling out the proper forms and submitting them to the patent office, with the proper filing fees.

Twelve to thirty six monthsafter the patent is filed, an examiner at the patent office reviews it, and typically rejects some of the claims. At this point, prosecution begins. Prosecution is the act of arguing the validity of the patent with the patent examiner, with the goal of convincing him or her to allow as many claims as possible. The fees for this phase are variable, and typically range from $1,000 to $4,000, depending on the amount of time involved.

Negotiate with the Patent Office

Richard Gearhart — Fri, 20 Mar 2009 17:50:12 -0500

After the application is ultimately filed as a utility application, it will sit at the USPTO for about 12-18 months before it is reviewed by a Patent Examiner. The Examiner will do his or her own prior art search, and will typically issue several rejections based on form and/or on other patents.

This is referred to the “prosecution phase” of the patent process. It can be thought of as a negotiation with the Examiner over the allowability of the application and the scope of protection.

Each time the USPTO issues a rejection, your patent attorney must prepare a response. Patent cases usually involve at least one response and frequently two. Your attorney should provide you with a copy of all correspondence to and from the USPTO.

There are other possibilities that may arise during the prosecution phase of the application which cannot be predicted with certainty in advance. These include restriction requirements, the filing of continuations, appeals, etc., though all can occur during a typical process. If the Examiner eventually allows the patent, then you will be responsible for paying an issue fee to the USPTO. Afterwards, your patent will likely have a term of at least 20 years from the date it is filed.

File the Patent Application

Richard Gearhart — Thu, 19 Mar 2009 17:49:06 -0500

If the results of your patent search are favorable, then you will need to draft the claims and, if necessary, have drawings prepared that accurately describe your invention. Legally you have the right to prepare your own application documents. However, to ensure that your idea has maximum protection under the law, it is particularly important that an experienced professional, such as a patent attorney, handle this step for you.

You can file the patent application as either a “provisional” or a “utility” application. If the application is filed as a provisional, then you will have one year to make modifications to the application. After you file a provisional application, it must be converted to a utility application within a year.

A provisional is best if you are still experimenting or think you would like to make changes. It may also “add” an additional year of patent term, i.e., 21 years instead of 20 years. The disadvantages are that it takes about three years for a patent to issue from the USPTO, and filing the provisional delays its examination for a year.

Conduct a Thorough Patent Search

Richard Gearhart — Wed, 18 Mar 2009 17:47:44 -0500

You must conduct a search to see if there is an existing patent or applications that constitute “prior art” to your idea. Searching patents is a complex and detailed process. Many patent writers only conduct a US patent search on Google or USPTO databases because it is easier and less time consuming.

However, there are additional search parameters that can be used. These include U.S. and international classification systems that search specialized proprietary databases, including World Intellectual Property, Japanese Patent Abstracts, European Patent Office and specialized scientific journals and papers when technology warrants.

Your objective is to establish that your idea is novel and not obvious. It may be difficult or impossible to patent your invention if prior to your application:

It was known or used by others in the U.S.
It was previously patented in the U.S. or elsewhere.
It was described in an article printed anywhere in the world.
The idea was obvious based on publications, patents or uses.

It is possible to conduct your own search, although most novices aren’t aware of the nuances of thorough search practices and patent laws. If you’re going to select a patent lawyer to assist you, look for one whose search methodology is comprehensive. Not all searches are the same!

Keep Your Idea Under Wraps

Richard Gearhart — Tue, 17 Mar 2009 17:44:36 -0500

Be sure you don’t disclose information about your work except to your patent attorney or, in other cases, with a solid non-disclosure agreement (NDA). You run the risk that someone may beat you to the patent process. If they have a good patent attorney on their side, it could jeopardize your ability to receive a patent even if you do possess some prior work.

What to do if you’ve already told people about your idea without a confidentiality or non-disclosure agreement? Get an agreement as soon as possible. You may need help with this from an attorney, who can word the agreement so that your idea is as well protected as possible.

If you publish your idea publicly, such as in a printed publication or on a web site, you must apply for a patent within a year, or you will forfeit your right to patent that invention.

Make a Record of Your Invention

Richard Gearhart — Mon, 16 Mar 2009 17:42:38 -0500

As soon as possible, create a “Record of Invention.” This is simply a collection of information that describes and documents your invention(s) and the process in as much detail as possible. Be sure to include:

A written statement of your idea and how it works, including a description of any experimentation that led to design improvements.
Drawings, sketches or pictures you have, even if they are only in rough form.
Any correspondence about your work, sales receipts from materials, and any other records that might help you prove the facts and dates of your accomplishments.

You should sign and date this record, and have a witness sign and date it as well. If you recall the date when you first thought of your invention, include that in the statement. This record could be important if you need to prove the date of your invention.

You can provide this record to your patent attorney as a way to improve his/her understanding of your invention. You can also submit it to the U.S. Patent and Trademark Office (USPTO) under its Disclosure Document Program, where it will be kept for two years pending filing for a patent. Doing so does not protect your idea. It merely establishes a record of your submission.